Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany, represented by Nameshield, France.
Respondent is Mojtaba Alimardani of Khorasanrazavi, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2015. On May 20, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On May 24, 2015, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on June 2, 2015.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2015. On June 24, 2015, the Center notified Respondent’s default.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on July 14, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a family-owned pharmaceutical group of companies and it is the owner of numerous marks worldwide which include the names Boehringer and Boehringer-Ingelheim, including for example BOEHRINGER-INGELHEIM, International Trademark Registration No. 221544, registered July 2, 1959 in classes 1 through 6 and 16, 17, 19, 29, 30 and 32. The earliest registration of this International Trademark was made July 17, 1939.
The disputed domain name was registered January 25, 2015 and resolves to a website that offers the sale of the disputed domain name, in the Persian language: دسر†یم†شورف†هب†هنماد†نیا. 5. Parties’ Contentions A. Complainant
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered or is being used in bad faith, all in violation of the Policy.
With respect to the first element, the Complaint states that “the addition of the Cctld ‘ME’ and ‘dash ‘-’ is not sufficient to escape the finding that the domain name is identical to his trademarks . . . . “1
As to the second element, the Complaint states “that Respondent has not legitimate interests in respect of the domain name and has registered the disputed domain name identical to the Complainant only in purpose of sale to a third.”
With respect to the third element, bad faith, the Complaint contends that “Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name.” This language in the Complaint is taken directly from Policy paragraph 4(b)(i).
On this basis, Complainant seeks transfer. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009).2 A. Identical or Confusingly Similar
The Panel agrees with Complainant’s allegation that the disputed domain name is identical to Complainant’s BOEHRINGER-INGELHEIM trademarks.
Panels commonly disregard domain name suffixes in determining whether a disputed domain name is identical or confusingly similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM),WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Without the “.ir” ccTLD, the disputed domain name is identical to Complainant’s BOEHRINGER-INGELHEIM trademark.
The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(1) – (3).
A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The absence of rights or legitimate interests is generally established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
The Panel accepts Complainant’s undisputed allegation that Respondent has no authorization or license to use its trademark in the disputed domain name. Any finding of a bona fide offering is precluded by the fact that Respondent offers no goods or services on the website.
The website to which the disputed domain name routes simply displays a notice that the disputed domain name is for sale, offering a contact phone number to chat about a possible sale. No other content appears. The Panel finds therefore that Respondent is using Complainant’s mark for its own commercial purpose and not making a noncommercial or fair use without intent for commercial gain. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784
Although Complainant does not address this point, it does not appear on the record that Respondent is commonly known by the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case.
Filing no response, Respondent has not rebutted the prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered or Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration or bad faith use, is also established, as elaborated below.
First, the Panel cannot accept the Complaint’s allegation under Policy paragraph 4(b)(i). To show bad faith under that provision, it must be established, among other things, that a respondent intended to sell, rent or transfer the disputed domain name “for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name.”The record fails to contain any evidence whatsoever with respect to the terms on which Respondent is offering the disputed domain name for sale, instead, there is a suggestion to call and chat about possible purchase; there is no proof that Respondent sought to sell for valuable consideration in excess of Respondent’s costs.
The Panel’s inquiry does not end there, however.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a lack of conceivable good faith uses for a domain name and a respondent’s failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that Respondent registered the disputed domain name with full awareness of Complainant’s marks, which had already been in use and registered for nearly a hundred years. The Panel infers that the disputed domain name registration was made with the intention of trading on the value of Complainant’s mark. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s marks.
The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Having refrained from replying to the allegations of the Complaint, Respondent has failed to rebut Complainant’s contention that the registration of the disputed domain name was made in bad faith.
The Panel concludes that the record establishes both the elements of bad faith registration and bad faith use by Respondent. Since either element alone is sufficient under the irDRP, the Panel concludes that the requirements of the third element of Policy paragraph 4(a) are fulfilled. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: July 28, 2015
1 The Panel assumes that Complainant’s representative in this proceeding intended to refer to the country-code Top-Level Domain (“ccTLD”) “.ir” and that the reference to “ME” was an oversight.
2 Due to the similarities between the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel considers it appropriate to include reference to cases decided under the UDRP.
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